Two patents may be valid when the second invention is an
improvement on the first, and if the second includes the first,
neither patentee can lawfully use the invention of the other
without his consent; but a stranger, sued for infringing the second
patent, cannot defend by setting up the existence of the first
patent.
Page 117 U. S. 690
Two machines or devices are substantially identical when they
perform substantially the same thing in substantially the same way,
to obtain the same result, and they differ from each other in the
sense of the patent law, when they perform different functions, or
in a different way, or produce substantially different results.
Machine Co. v. Murphy, 97 U. S.
12A, affirmed and applied.
The defendant in a suit for the infringement of a patent for an
invention, who sets up prior use and want of novelty as a defense,
has the burden of proof upon him to establish the facts set up
beyond all reasonable doubt, and in this case the defendants have
failed to show the alleged prior use even by preponderance of
proof.
This was a bill in equity to restrain the infringement of
letters patent. The case is stated in the opinion of the court.
MR. JUSTICE WOODS delivered the opinion of the Court.
This was a bill in equity filed by Wallick, the appellee, to
restrain the infringement by Cantrell and Petty, the appellants, of
letters patent granted to Wallick, dated May 25, 1875, for an
"improvement in apparatus for enameling moldings," on an
application filed October 16, 1874.
The specification stated the object of the invention to be "a
rapid and economical production of enameled moldings." It appears
from the record that the moldings referred to are those which,
after being enameled, are gilded and used for picture and mirror
frames, and other like purposes. In order to prepare the molding to
receive and retain the gilding, it is necessary to enamel the
surface to be gilded with a composition made of glue and whiting.
Long before the date of the plaintiff's application, the method of
doing this was by passing the molding through a vessel containing
the enameling material, the vessel having at its opposite sides and
in the same line, apertures of the shape of a section of the
molding, and large enough to permit the molding to pass through,
and leave a proper quantity of the enamel to pass out with and
adhere to it. As early as October, 1851, a patent had been granted
to Robert Marcher for an improvement in machinery
Page 117 U. S. 691
for enameling moldings. In Marcher's contrivance, the bottom of
the box or hopper which contained the enameling composition was
left open. The opposite sides of the box were made with apertures
of suitable size and shape for receiving the end of the molding,
and when the end of the molding was thrust through both the
apertures the molding formed the bottom of the box. The result was
that on passing a molding through the box its face was enameled,
but its back, which did not come in contact with the composition in
the box, was not.
The means used to drive the moldings through the box were not
covered by this patent, but this was done sometimes by hand and
sometimes by passing them between revolving feed rollers. The
latter became the more common method. In order to give a good
enamel it was necessary to pass the molding through the box several
times.
According to the contention of the plaintiff, this was the state
of the art when he invented the device covered by his patent.
The specification of the plaintiff's patent stated that in
enameling certain forms of molding, for instance, the moldings
shown in Figs. 2 and 3 of the drawings, feed rollers could not be
used for passing the moldings through the Marcher box without
disturbing the coats of enamel on which the upper feed roller must
bear. It then proceeded thus:
"The main aim of my invention has been to so construct an
enameling box, and so form the strips of wood, that feed rollers
may be employed to pass the strips through the reservoir containing
the enameling composition."
"For enameled moldings like Figs. 1 and 2, for instance, I
prepare a strip of wood, Fig. 5, with a groove
x above for
receiving the upper feed roller, and a groove
y below for
receiving the lower feed roller, and then pass the strip through an
enameling box of peculiar construction, so that the rounded edges
only are coated, and when these edges have received the proper
number of coats I sever the strip, so as to produce either of the
moldings, Figs. 1 and 2."
"For making moldings like Fig. 3, I prepare a strip of the
Page 117 U. S. 692
form shown by Fig. 6, so that upper and lower feed rollers may
be used to force the strip through the enameling box. After the
edges of the strip have been properly enameled, I"
image:a
"sever it in the middle, thereby producing two moldings, like
Fig. 3."
"The box by which the enamel is applied to these strips is
Page 117 U. S. 693
illustrated in vertical section, Fig. 8, and transverse vertical
section, Fig. 9, of the accompanying drawing, the box being, in the
present instance, arranged for enameling the strip, Fig. 5."
"
A and
A' are two plates, which are confined
by suitable bolts,
a a', two bent plates,
b b',
forming, under the circumstances explained hereafter, two
reservoirs,
B B', for containing the fluid or semi-fluid
enameling composition. The distance between the turned-up portion
z of one plate
b, and that of the other plate is
equal to the width of the groove
y of the strip, Fig. 5. A
permanent longitudinal bar
d extends from the plate
A to the plate
A' and to each side of this bar is
secured a plate
e of metal, the distance across the bar
and its two plates being equal to the width of the groove
x of the strip, Fig. 5, against the edges of which groove
the said plates bear."
"In each of the plates
A and
A' there is an
opening, conforming in shape and dimensions to that of the strip,
Fig. 5, and these openings bear such relations to the turned-up
edges of the plates
b b' and to the bar
d that
the strip, when introduced into the box, will be in the position
shown in Fig. 9, so that no parts of the strip excepting the
rounded edges are exposed to the enameling composition. After thus
passing the end of the strip of molding through the openings in the
plates
A A', the composition may be introduced into the
reservoirs
B B', for all avenues for the escape of the
fluids are cut off by the strip itself."
"Feed rollers
X X' (shown in dotted lines) may be used
for forcing strip after strip through the enameling box, the said
rollers in no way interfering with the different coatings of
enamel, because they are never in contact with the enameled
surfaces."
"In other words, the enameling box is separated into two
reservoirs, partly by a permanent partition and partly by the
strip, which is passed through the box so that the edges only of
the strip are exposed to the enameling composition, one edge to the
composition in one compartment and the other edge to that in the
other compartment."
The claim was as follows:
Page 117 U. S. 694
"An enameling box divided into two compartments by a slotted
partition, and having openings at the ends in a line with the slot
in the partition, all substantially as and for the purpose set
forth."
The defenses relied on were that the specification was too
broad, and embraced and appropriated the Marcher box;
noninfringement, and prior use by Frederick W. Werner and T. C.
Ladd and Co., of Brooklyn.
The first defense is based on the theory that a patent cannot be
valid unless it is new in all its elements as well as in the
combination, if it is for a combination. But this theory cannot be
maintained. If it were sound, no patent for an improvement on a
known contrivance or process could be valid. And yet the great
majority of patents are for improvements in old and well known
devices, or on patented inventions. Changes in the construction of
an old machine which increase its usefulness are patentable.
Seymour v.
Osborne, 11 Wall. 516. So a new combination of
known devices, whereby the effectiveness of a machine is increased,
may be the subject of a patent.
Loom Co. v. Higgins,
105 U. S. 580;
Hailes v. Van
Wormer, 20 Wall. 353. Two patents may both be valid
when the second is an improvement on the first, in which event, if
the second includes the first, neither of the two patentees can
lawfully use the invention of the other without the other's
consent.
Star Salt Caster Co. v. Crossman, 4 Cliff.
568.
Therefore letters patent for an improvement on a patented
invention cannot be declared void because they include such
patented invention. Much less does it lie in the mouth of a party
who is infringing both the improvement and the original invention
to set up the existence of the first patent as an excuse for
infringing the improvement. It is only the patentee of the original
invention who has the right to complain of the use made of his
invention. We are therefore of opinion that the first defense to
the suit must fail.
On the question of infringement, a comparison of the model of
the plaintiff's patent with the model of the device shown to be in
use by the defendants makes it clear that the defendants have
adopted substantially the invention of the plaintiff. It
Page 117 U. S. 695
would baffle the ingenuity of the most skilled expert to show a
substantial difference between the invention claimed by the
plaintiff and that which it is conceded that the defendants use. It
may be true, as contended by the defendants, that the device used
by them is in some respects better than that of the plaintiff, but
this cannot relieve them from the charge of infringement if the
devices are substantially alike. The rule was well stated by Mr.
Justice Clifford in delivering judgment in the case of
Machine
Company v. Murphy, 97 U. S. 120, when
he said that
"in determining the question of infringement, the court or jury
are not to judge about similarities or differences by the names of
things, but are to look at the machines, or their several devices
or elements, in the light of what they do or what office or
function they perform, and to find that one thing is substantially
the same as another if it performs substantially the same function,
in substantially the same way, to obtain the same result, always
bearing in mind that devices in a patented machine are different in
the sense of the patent law when they perform different functions,
or in a different way, or produce substantially a different
result."
Tested by this rule, the charge of infringement made against the
defendants is clearly made out.
It remains to inquire whether prior use and want of novelty have
been shown. The prior use and consequent want of novelty alleged by
the defendant was the making in 1866, and the using from that date
until 1871, by Frederick W. Werner, of a box for enameling moldings
in which the invention described in the patent of the plaintiff was
embodied. Werner testified to this making and use and to the
further fact that in 1874 he sold the box to Ladd, who sometime
afterwards began using it. The burden of proof is upon the
defendants to establish this defense, for the grant of letters
patent is
prima facie evidence that the patentee is the
first inventor of the device described in the letters patent and of
its novelty.
Smith v. Goodyear Dental Vulcanite Co.,
93 U. S. 486;
Lehnbeuter v. Holthaus, 105 U. S. 94. Not
only is the burden of proof to
Page 117 U. S. 696
make good this defense upon the party setting it up, but it has
been held that "every reasonable doubt should be resolved against
him."
Coffin v.
Ogden, 18 Wall. 120,
85 U. S. 124;
Washburn v. Gould, 2 Story 122, 142.
The proof of prior use in this case depends on the testimony of
Werner and T. C. Ladd. The contrivance to which the testimony of
these witnesses refers is not produced, nor any model of it. It is
merely represented in a drawing made by Werner six years after he
had sold the box to Ladd.
These two witnesses are contradicted by four others who were
engaged in the factory where the box was used and who had
frequently seen the box referred to when in use and the moldings
enameled by its use. Their testimony shows that the distinctive
element in Wallick's contrivance was not used in the box, but that
it was substantially the old Marcher box. The defendants have
therefore failed to show by preponderance of proof, much less
beyond reasonable doubt, the prior use on which they rely. On the
contrary, the weight of the evidence is against this defense.
Decree affirmed.